national arbitration forum

DECISION

BlanX America Inc. v. Panker Frederic and F deMont, Inc.

Claim Number: FA0512000611712

PARTIES

Complainant is BlanX America Inc. (“Complainant”), represented by Anna Rogers, 3711 Dairyland Road, Hillsborough, NC 27278. Respondent is Panker Frederic and F deMont, Inc. (“Respondent”), represented by Luca M. Geoni, of Porta Checcacci & Associati S.p.A., Via Trebbia, 20, Milan, 20135 Italy.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <blanxusa.com>, registered with Gkg.Net, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

ROBERT T. PFEUFFER, Senior District Judge, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 16, 2005; the National Arbitration Forum received a hard copy of the Complaint on December 22, 2005.

On December 20, 2005, Gkg.Net, Inc. confirmed by e-mail to the National Arbitration Forum that the <blanxusa.com> domain name is registered with Gkg.Net, Inc. and that the Respondent is the current registrant of the name. Gkg.Net, Inc. has verified that Respondent is bound by the Gkg.Net, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On December 29, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 18, 2006 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@blanxusa.com by e-mail.

A timely Response was received and determined to be complete on December 30, 2005.

therefore the panel has determined it will review the submission, but not consider it in making its decision.

On January 5, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Robert T. Pfeuffer as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Plaintiff contends that:

1. BX Trade is the current and proper owner of the BLANX trademarks rights and trademark registration in the United States,

2. BX Trade never contracted away any United States rights,

3. BX Trade is the owner of the <blanx.it> domain name (and the corresponding website) and has licensed BlanX America to use “blanx” in the <blanxamerica.com> domain name - in order to sell the BX Trade toothpaste products under the BLANX trademark in the United States,

4. BX Trade is the owner of the BLANX copyrights in the United States, and

5. Only BX Trade and BlanX America are permitted to sell BLANX toothpaste products in the United States in accordance with the U.S. Food and Drug Administration.

B. Respondent

Respondent contends that his clients, Respondent, are the lawfully registered owners of the <blanxusa.com> domain name, which he received in a series of contracts with BX Trade S.r.l./Keraunos S.r.l. and that Respondent is the US BlanX distributor for Guaber S.p.A. and that Respondent is the only legal entity authorized by Guaber to use the BLANX mark inside the <blanxusa.com> domain name. Respondent alleges that it uses the name in good faith to market toothpaste and related products as a result of its contractual relations with Guaber and its assignors.

C. Additional Submissions

On January 18, 2006 the National Arbitration Forum received an additional filing on behalf of Complainant in response to the Response filed by the Respondent on December 30, 2005. The Additional Submission does not comply with Supplemental Rule 7 and therefore the panel has determined it will review the submission but not consider it in making its decision.

FINDINGS

The panel concludes that a determination regarding a lapsed licensing agreement is outside the scope of the UDRP. See Discover New England v. Avanti Group, Inc., FA 123886 (Nat. Arb. Forum Nov. 6, 2002) (finding the dispute outside the scope of the UDRP because the dispute centered on the interpretation of contractual language and whether or not a breach occurred); see also Thread.com LLC v. Poploff, D2000-1470 (WIPO Jan. 5, 2001) (refusing to transfer the domain name and stating that the ICANN Policy does not apply because attempting “to shoehorn what is essentially a business dispute between former partners into a proceeding to adjudicate cybersquatting is, at its core, misguided, if not a misuse of the Policy”).

In addition, please see the following authorities for support of this determination:

Commercial Publ’g Co. v. EarthComm., Inc., FA 95013 (Nat. Arb. Forum July 20, 2000) (finding that the Policy’s administrative procedure is “intended only for the relatively narrow class of cases of ‘abusive registrations’ ... The [P]olicy relegates all ‘legitimate disputes’ to the courts”)

KTM Sportsmotorcycle USA, Inc. v. Cycle Hutt, Inc., FA 155894 (Nat. Arb. Forum July 10, 2003) (finding that a determination of whether an agreement between the parties was rightfully or wrongfully terminated is an issue outside the scope of the USRP and “cannot be the basis for the transfer of the disputed domain name”).

Xerox Corp. v. Franklin, FA 425390 (Nat. Arb. Forum April 14, 2005) (“[C]ases in which there is a deep contractual relationship between the parties, and where registered domain names are subject to legitimate disputes, should normally be relegated to the courts.”).

DECISION

The panel having decided that this case should be determined outside the provisions of the UDRP, the same is now dismissed without prejudice for decision by a court of competent jurisdiction.

IT IS SO ORDERED.

Judge Robert T. Pfeuffer, Panelist
Dated: January 19, 2006